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Legislative Implementation of Flexibilities - Australia

Title:Sections 44, 45, 47 and 48 of the Patens Act No. 83 of 1990 as last amended by Act No. 106 of 2006
Field of IP:Patents
Type of flexibility:Substantive examination
Summary table:PDF

Provisions of Law

44 Request for examination

(1) Where a complete application for a standard patent has been made, the applicant may, within the prescribed period and in accordance with the regulations, ask for an examination of the patent request and specification relating to the application.

(2) Where a complete application has been made for a standard patent, the Commissioner may, on one or more of the prescribed grounds and in accordance with the regulations, direct the applicant to ask, within the prescribed period, for an examination of the patent request and complete specification relating to the application.

(3) Where the patent request and specification relating to a complete application for a standard patent are open to public inspection, a person may, in accordance with the regulations, require the Commissioner to direct the applicant to ask, within the prescribed period, for an examination of the request and specification.

(4) Where required under subsection (3), the Commissioner must give a direction accordingly, unless the applicant has already asked, or been directed to ask, for an examination of the patent request and specification.

45 Examination

(1) Where an applicant asks for an examination of a patent request and complete specification relating to an application for a standard patent, the Commissioner must examine the request and specification and report on:

(a) whether the specification complies with section 40; and

(b) whether, to the best of his or her knowledge, the invention, so far as claimed, satisfies the criterion mentioned in paragraph 18(1)(a); and

(c) whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim:

(i) is novel; and

(ii) involves an inventive step; and

(d) such other matters (if any) as are prescribed.

(1A) For the purposes of paragraph (1)(c), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area).

(2) The examination must be carried out in accordance with the regulations.

(3) The applicant must inform the Commissioner, in accordance with the regulations, of the results of the following searches carried out for the purpose of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia:

(a) any documentary searches by, or on behalf of, a foreign patent office, other than searches prescribed by the regulations;

(b) the documentary searches prescribed by the regulations.

(4) Subsection (3) only applies to searches completed before the grant of the patent.

(5) In subsection (4):

completed, in relation to a search, has the meaning prescribed by the regulations.

Division 2 - Modified examination

47 Request for modified examination

(1) Where:

(a) a complete application for a standard patent has been made; and

(b) a patent has been granted in a prescribed foreign country in respect of a prescribed application made in that country;

the applicant may, instead of asking for an examination, ask for a modified examination of the patent request and specification relating to the application.

(2) The applicant may withdraw a request for a modified examination at any time before acceptance of the patent request and specification and ask for an examination under section 44 instead.

48 Modified examination

(1) When an applicant asks for a modified examination of a patent request and complete specification relating to an application for a standard patent, the Commissioner must examine the request and specification and report on:

(a) whether, to the best of his or her knowledge, the invention, so far as claimed, satisfies the criterion mentioned in paragraph 18(1)(a); and

(b) whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim:

(i) is novel; and

(ii) involves an inventive step; and

(c) such other matters (if any) as are prescribed.

(1A) For the purposes of paragraph (1)(b), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area).

(2) The modified examination must be carried out in accordance with the regulations.

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